In this case study video, I discuss a decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) in which the panel found an abbreviation of a trademark in a domain name to be confusingly similar to the trademark. The case involved the domain name <brs.contact> and the trademark BOURSORAMA.
As I explain in the video, the issue was more complicated than in the typical UDRP case, where the first element of the UDRP’s three-part test “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name,” as the WIPO Overview says.
But in this case, the complainant didn’t own any trademark rights in BRS, it only owned trademark rights in BOURSORAMA. And the letters “BRS” are, at least arguably, not immediately clear as an abbreviation for the trademark BOURSORAMA: “BRS” obviously consists of only three letters from the 10-letter BOURSORAMA trademark, which is not a dictionary word with a common abbreviation, and the letters “BRS” do not appear together in the BOURSORAMA trademark.
In assessing confusing similarity, the panel wrote:
[T]he threshold required by the First Element of the Policy is met. As a matter of fact the element "BRS" could indeed be considered as an abbreviation of the BOURSORAMA trademark as confirmed also by the registration and use by the Complainant of domain names composed by BRS (see - <brsimg.com>; <brsourama.com>; < brsp.app >).
The Panel considers of relevance also the way the disputed domain name is used. The Complainant has submitted evidence that the Respondent used <brs.contact> to impersonate itself as the Complainant…. In these documents, the Respondent refers to BOURSORAMA as BRS (i.e. "BOURSORAMA (BRS)") confirming that BRS could be perceived as an abbreviation of the Complainant's trademark.
Under different circumstances, such as if the domain name registrant had used it in connection with a website for something else that uses “BRS” — perhaps “Bulk Reef Supply” (a company that provides products for saltwater aquariums) or “Blad Runner Systems” (a knife company) — then the outcome of this UDRP case would have been different.
The important takeaway from this case is that this decision really applies a very broad interpretation of the first element of the UDRP, even implying that how a registrant uses a domain name may be relevant in assessing whether a domain name is confusingly similar to a trademark.
